Beruflich Dokumente
Kultur Dokumente
DISTRICT OF MASSACHUSETTS
______________________________
)
NEWRIVER, INC., )
Plaintiff )
)
v. ) CIVIL ACTION
) NO. 06-12146-WGY
NEWKIRK PRODUCTS, INC., )
Defendant )
)
MEMORANDUM OF DECISION
AND ORDER
- the civil action,” there is, for good or ill, another - the
patent case.
1
As quoted by Hon. Hiller B. Zobel, Reflections of the
Justices 24 (2009).
1
assignee of the United States Patent No. 6,122,635 (the “‘635
including the crucial claims 9-11 which had been found infringed,
Jury Verdict (Doc. No. 301). In addition, the jury found that
matter of law that it did not infringe ‘635 patent claims 9-11
(Doc. No. 305), and filed a motion for judgment as matter of law
that ‘635 patent claims 6, 13-15, and 19-21 are invalid (Doc. No.
motion for judgment as matter of law that ‘635 patent claims 9-11
are valid and not obvious (Doc. No. 312); 2) a motion for
2
claims 13-15 and 19-21 (Doc. No. 315); and 3) a motion for a new
II. BACKGROUND
3
l.27-32. It also determines the operative or “effective” date of
III. ANALYSIS
4
A. Judgment As Matter of Law
Inc. v. O2 Micro Intern. Ltd., 558 F.3d 1341, 1349 (Fed. Cir.
1340, 1353 (Fed. Cir. 2007)). “The Court must also consider all
the evidence before the jury and draw all reasonable inferences
1149.
5
the same proposition. In practice, they may not, though the
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure
1111, 1115 (Fed. Cir. 2004)). This Court construed the ‘635
478 F. Supp. 2d 158, 162-64 (D. Mass. 2007). On May 28, 2008,
the Court ruled that its March 21, 2007 NewRiver v. Mobular claim
6
1321 (Fed. Cir. 2009).
Corp., 288 F.3d 1359, 1365 (Fed. Cir. 2002). Patents may be
under the doctrine of equivalents and the Court thus removed the
Supp. 2d 160, 205 (D. Mass. 2008), where this Court followed
precisely the same procedure for precisely the same reason. The
2
As the Federal Circuit held:
. . . .
7
considered literal infringement and found challenger Newkirk
Claim 13 recites:
Amgen Inc. v. Hoffman-La Roche Ltd., 580 F.3d 1340, 1382 (Fed.
Cir. 2009).
8
performing the steps of:
Trial Tr. vol. 7, 838:11-18, 901:9-15, Mar. 24, 2009; Trial Tr.
9
would support a jury finding that its system does not store
testified that the system does not perform the storing limitation
did not infringe on claims 13-15 and 19-21 and NewRiver’s motion
10
prospecti and other items of compliance information obtained from
system: (1) sends a user Newkirk software and data over the
raw EDGAR filing on the user computer using Newkirk software, and
v. Vaughan Co., Inc., 449 F.3d 1209, 1220 (Fed. Cir. 2006)
from the evidence submitted that each of the tanks infringed the
11
infringement).
is therefore denied.
C. Invalidity
ordinary skill in the pertinent art would have found the patent
3
35 U.S.C. § 103 provides:
12
invalidity based on obviousness. Id. at 399. Under the TSM
test, a patent claim is only proven obvious “if the prior art,
at 418.
13
v. Resco Metal and Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir.
2001).
asserts that based on the evidentiary record and the prior art no
Ex. 200); Google Book Search (Heslin Decl., Ex. I, Trial Ex.
201); EDGAR Today Article (Heslin Decl., Ex. K, Trial Ex. 202);
204); and the ‘635 Patent (Heslin Decl., Ex. H, Trial Ex. 1). In
search within the EDGAR database for specific filings and custom
14
searching the EDGAR database were publicly available before the
patented invention. Web users could filter the data on the NYU
date range, or the form type, e.g., annual report. Trial Tr.
combined with the NYU Filing Retrieval Toolkit (Heslin Decl., Ex.
E, Trial Ex. 198) and the EDGAR Today Article (Heslin Decl., Ex.
K, Trial Ex. 202) make clear that users could search the EDGAR
Mar. 17, 2009. Moreover, the prior art references and testimony
v. Blue Sky Medical Group, Inc., 554 F.3d 1010, 1019 (Fed. Cir.
15
splitting, or determining the effectiveness date of compliance
16
the invalidity findings for claims 9-11 present a much closer
evidence that Digital Direct did not disclose the disputed claim
clients and did not derive such data from EDGAR at all. Trial
claims, Dr. Szymanski merely reads the claim into evidence and
concludes that in his opinion, the claims would have been obvious
17
Q: Dr. Szymanski, please read claim 9.
A: Yes, I do.
18
law.’” The Johns Hopkins University v. Datascope Corp., 543 F.3d
Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed.
required threshold.
this Court must follow the First Circuit standards. DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1334 (Fed.
bench trial.’” Ahern v. Scholz, 85 F.3d 774, 780 (1st Cir. 1996)
(quoting Milone v. Moceri Family, Inc., 847 F.2d 35, 37 (1st Cir.
19
Not Been Proven
Corp., 90 F.3d 1558, 1566 (Fed. Cir. 1996)). The evidence must
Corp., 504 F.3d 1293, 1305 (Fed. Cir. 2007) (quoting Texas
20
how specific claim limitations were met, she failed to provide
Id.
2. Prejudicial References
validity.
21
from the trial, the ‘635 Patent was presumed valid, and that
On this point, NewKirk may yet snatch defeat from the jaws
22
statutory law. Daubert v. Merrill Dow Pharm. Inc., 509 U.S. 579,
that claims 9-11 were obvious (the ultimate issue). True, he did
not provide any basis for his opinion, but he was not then
Koito and the cases cited therein, however, make clear that,
23
equivalents, the unsupported opinion even of a qualified expert
record.5
4
The Federal Circuit surely has this tension in mind, for
it has carefully delineated those areas where the Federal Rules
of Evidence operate in their usual fashion. See Symbol
Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed.
Cir. 1991) (infringement governed by Federal Rules of Evidence).
See also Judge Whyte’s most thoughtful opinion in Hynix
Semiconductor Inc. v. Rambus Inc., No. 00-20905, 2009 WL 230039,
at *18-19 (N.D. Cal. Jan. 27, 2009) which gives Koito and the
more recent Cytlogix Corp. v. Ventana Medical Systems, Inc., 424
F.3d 1168 (Fed. Cir. 2005) (written description treated like
anticipation, obviousness, and doctrine of equivalents evidence)
a narrow interpretation since those decisions, unlike Symbol
Technologies, fail to acknowledge the implications of Rule 705.
5
This disconnect between the Federal Rules of Evidence and
the substantive doctrines of patent law seems to have gone
totally unremarked both by the patent bar and evidence scholars.
I have taught evidence for over a quarter century and have
24
Although the tension between the Federal Rules of Evidence
b. Waiver
eliciting his opinion that claim 9 was obvious. Trial Tr. vol.
25
this regard. It was only after the verdict that NewRiver
position.
But so what?
Freiday, No. 94-1504, 1995 WL 515227 (Fed. Cir. Aug. 30, 1995)
Hoffman-La Roche Ltd., 580 F.3d 1340, 1383 (Fed. Cir. 2009),
objection had been made. But see Symbol Technologies, 935 F.2d
claims).
I told the jury that they were the sole judges of the facts.
jury they could believe (or disbelieve) any witness who had
26
obviousness and told the jury to make the determination
Syzmanski’s opinion was fatally flawed since its bases were never
explained and the jury therefore was not entitled to credit it.
not have been laid before them. In short, I botched the jury
charge.
Co., 337 F.3d 1362, 1368 (Fed. Cir. 2003). In a jury case, of
a jury draws the ultimate conclusion and the trial judge and
7
This is not the only area where, notwithstanding the fact
intensive nature of the inquiry, the Federal Circuit simply
announces that an issue is matter of law to insure de novo
review. It has followed an identical approach with respect to
file wrapper estoppel. See Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 344 F.3d 1359, 1368 (Fed. Cir. 2003). See
also Amgen, Inc. v. Hoechst Marion Roussel, Inc., 287 F. Supp. 2d
126, 134-36 (D. Mass. 2003) (criticizing Festo).
27
record, drawing all inferences in favor of the verdict. Upjohn
Co. v. Mova Pharmaceutical Corp., 225 F.3d 1306, 1310 (Fed. Cir.
Yet simply to set aside the jury’s verdict will not do.
thus sent the jury off on a wild goose chase. To disregard their
told me. “You praise the jury and do everything you can to keep
E. What to Do?
clear. Since the First Circuit standard for granting new trials
F.3d 1314, 1334 (Fed. Cir. 2009), there must be a new trial
28
before a properly charged jury on the issue of the obviousness
only fair since the jury here was a fully empowered and engaged
It is so ORDERED.
8
Here the jury was empowered both to take notes and ask
questions, Trial Tr. vol. 11, 1428:12-16, Apr. 2, 2009, and it
did so. See, e.g., Trial Tr. vol. 13, 1523:7-17, Apr. 7, 2009.
9
Judge Lungstrum’s views on case management are especially
pertinent as he is a recognized authority on the matter, having
29
opinion testimony concerning obviousness).
sponte, will rule on its adequacy. The Court will interpose its
30
no doubt make them more difficult to try, the ultimate result
will exclude junk opinions (the most necessary and salutary goal
thee.”11
By the Court,
11
With apologies to Thomas Moore, The Minstrel Boy. See
The Clancy Brothers & Tommy Makem, The Minstrel Boy, on The
Rising Moon: Irish Songs of Rebellion (Tradition Records 1959).
31
Publisher Information
Note* This page is not part of the opinion as entered by the court.
The docket information provided on this page is for the benefit
of publishers of these opinions.
Attorneys
Michael A. Albert Wolf, Greenfield & Sacks, PC 600 representing Newriver, Inc., (Plaintiff)
Atlantic Avenue Boston, MA 02210 617-720-3500
617-720-2441 (fax) malbert@WolfGreenfield.com
Assigned: 11/30/2006 LEAD ATTORNEY ATTORNEY
TO BE NOTICED
Newriver, Inc., (Counter
Defendant)
Ilan N. Barzilay Wolf, Greenfield & Sacks, PC 600 representing Newriver, Inc., (Plaintiff)
Atlantic Avenue Federal Reserve Plaza Boston, MA
02210 617-720-3500 617-720-2441 (fax)
ibarzilay@wolfgreenfield.com Assigned: 11/30/2006
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Newriver, Inc., (Counter
Defendant)
Edward J. Dailey Sunstein Kann Murphy & Timbers representing Newkirk Products, Inc.,
LLP 125 Summer Street Boston, MA 02110-1618 (Defendant)
617-443-9292 617-443-0004 (fax)
edailey@sunsteinlaw.com Assigned: 08/01/2007
ATTORNEY TO BE NOTICED
Robert E Heslin Heslin, Rothenberg, Farley, & Mesiti representing Newkirk Products, Inc.,
P.C. 5 Columbia Circle Albany, NY 12203 518-452- (Counter Claimant)
5600 518-452-5579 (fax) reh@hrfmlaw.com
Assigned: 04/18/2007 LEAD ATTORNEY ATTORNEY
TO BE NOTICED
Newkirk Products, Inc.,
(Defendant)
Brett M. Hutton Heslin Rothenberg Farley & Mesiti representing Newkirk Products, Inc.,
P.C., 5 Columbia Circle Albany, NY 12203 518-452- (Counter Claimant)
5600 518-452-5579 (fax) bh@hrfmlaw.com Assigned:
03/31/2008 LEAD ATTORNEY PRO HAC VICE
ATTORNEY TO BE NOTICED
Newkirk Products, Inc.,
(Defendant)
Robert L. Kann Sunstein Kann Murphy & Timbers LLP representing Newkirk Products, Inc.,
125 Summer Street Boston, MA 02110 617-443-9292 (Defendant)
617-443-0004 (fax) rkann@sunsteinlaw.com Assigned:
03/30/2007 LEAD ATTORNEY ATTORNEY TO BE
NOTICED
Lee Palmateer Heslin, Rothenberg, Farley, & Mesiti representing Newkirk Products, Inc.,
P.C. 5 Columbia Circle Albany, NY 12203 518-452- (Counter Claimant)
32
5600 518-452-5579 (fax) lp@hrfmlaw.com Assigned:
04/18/2007 LEAD ATTORNEY ATTORNEY TO BE
NOTICED
Newkirk Products, Inc.,
(Defendant)
Kimberly J. Seluga Sunstein Kann Murphy & Timbers representing Newkirk Products, Inc.,
LLP 125 Summer Street Boston, MA 02110 617-443- (Defendant)
9292 617-443-0004 (fax) kseluga@sunsteinlaw.com
Assigned: 03/30/2007 LEAD ATTORNEY ATTORNEY
TO BE NOTICED
Newkirk Products, Inc.,
(Counter Claimant)
John L. Strand Wolf, Greenfield & Sacks, PC 600 representing Newriver, Inc., (Plaintiff)
Atlantic Avenue Boston, MA 02210 617-720-3500
617-720-2441 (fax) jstrand@wolfgreenfield.com
Assigned: 02/08/2008 ATTORNEY TO BE NOTICED
Kerry L. Timbers Sunstein Kann Murphy & Timbers representing Newkirk Products, Inc.,
LLP 125 Summer Street Boston, MA 02110-1618 (Defendant)
617-443-9292 617-443-0004 (fax)
ktimbers@sunsteinlaw.com Assigned: 03/30/2007
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Newkirk Products, Inc.,
(Counter Claimant)
33